The International Legal Framework for the Protection of Geographical Indications

1. The International Legal Framework for the Protection of Geographical Indications Violeta Jalba Industrial Designs and Geographical Indications Law Section Brands and Designs Sector WIPO

2. Geographical indications

3. The common feature? HAVANA BASMATI ROQUEFORT DARJEELING TEQUILA Geographical connotation!

4. What is a geographical indication? • sign used on goods which have a specific geographical origin and possess particular qualities or a reputation due to that place of origin • a defined geographical area of production • specific production methods • a specific quality of the product • a name and reputation that differentiate the product from others.

5. How are geographical indications protected? • unfair competition laws (passing off), • consumer protection acts, • agricultural quality control regimes, • laws governing trademarks, collective marks and certification marks, • protection under specific, sui generis GI laws Right to prevent unauthorized persons from using geographical indications; Protection against becoming generic expressions

6. International Legal Framework Bilateral Agreements • draft agreement between the EU and Switzerland, providing for the mutual protection of the Designations of Origin and Geographical Indications of each of the two parties on the territory of the other (800 registered GIs in the EU and the 22 GIs registered in Switzerland for agricultural products and foodstuffs). • The wine trade agreement between Australia and the EU came into force on September 1, 2010 (full protection to EU geographical indications and traditional expressions; Australian producers will not be able to use terms like Champagne, Port and Sherry along with some traditional expressions such as Amontillado, Claret and Auslese).

7. International Legal Framework Multilateral Agreements • the Paris Convention for the Protection of Industrial Property, • the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, • the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, • Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) • Madrid Agreement and Protocol Concerning the International Registration of Marks

8. The Paris Convention for the Protection of Industrial Property of 1883 173 States Party to the Paris Convention

9. The Paris Convention for the Protection of Industrial Property of 1883 Article 1(2) of the Paris Convention The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition.

10. The Paris Convention for the Protection of Industrial Property of 1883 • Article 10 of the Paris Convention in cases of “direct or indirect use of a false indication of the source of the goods or the identity of the producer, manufacturer or merchant,” Article 9 of the Paris Convention should be applicable. • Article 9 of the Paris Convention provides that goods bearing a false indication of source are subject to seizure upon importation into countries party to the Paris Convention, or within the country where the unlawful affixation of the indication of source occurred or within the country of importation.

11. The Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods of 1891 35 States Party to the Madrid Agreement

12. The Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods of 1891 Prevent the use of: • “false” indications of source, • “deceptive” indications of source (which are literally true but nevertheless misleading) Special provision for “regional appellations concerning the source of products of the vine” (Article 4)

13. The Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration of 1958 Europe (11) Bulgaria Czech Rep. France Hungary Italy Moldova Montenegro Portugal Serbia Slovakia The FYR of Macedonia 27 Members States America (6) Costa Rica Cuba Haiti Mexico Nicaragua Peru Asia (4) Georgia Islamic Rep. of Iran Israel DPR of Korea Africa (6) Algeria Burkina Faso Congo Gabon Togo Tunisia

14. The Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration of 1958 Article 2(1) “Appellation of origin” means the geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.”

15. The main principle of the Lisbon Agreement • The States undertake to protect on their territories, in accordance with the terms of the Agreement, the appellations of origin … recognized and protected “as such” in the country of origin and registered at the International Bureau of WIPO State Party to Lisbon Agreement Country of origin International Register administered by WIPO State Party to Lisbon Agreement 1 year AO protected State Party to Lisbon Agreement State Party to Lisbon Agreement State Party to Lisbon Agreement

16. Lisbon Agreement 892 registrations – 818 in force • France 508 • Czech Rep. 76 • Bulgaria 51 • Slovakia 37 • Italy 31 • Hungary 28 • Georgia 20 • Cuba 19 • Mexico 12 • Total registered since 1995: 162 • - of which since 2003: 47 • Algeria 7 • Portugal 7 • Tunisia 7 • DPR of Korea 6 • Peru 4 • Montenegro 2 • Moldova 1 • Israel 1 • Serbia 1 • Wines registered since 1995: 91 • - of which since 2003: 23

17. Important issues Article 3 Protection shall be ensured against any usurpation or imitation, even if the true origin of the product is indicated or if the appellation is used in translated form or accompanied by terms such as "kind," "type," "make," "imitation," or the like. Article 6 An appellation which has been granted protection in one of the countries of the Special Union pursuant to the procedure under Article 5 cannot, in that country, be deemed to have become generic, as long as it is protected as an appellation of origin in the country of origin.

18. Examples AOs registered under Lisbon Agreement

20. TRIPS Agreement General standard of protection (Art. 22.2) “Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member [of the World Trade Organization], or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.” Members should provide the legal means to prevent the use of GIs : • which misleads the public as to the geographical origin of the good • which constitutes an act of unfair competition - to refuse or invalidate registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated

21. TRIPS Agreement Additional protection for wines and spirits (Art. 23) Members should provide the legal means to prevent the mere use of GIs in wines and spirits not originating from the place of GI (even where the true origin is indicated): • no need to prove that use misleads the public as to the geographical origin of the good • no need to prove that use constitutes an act of unfair competition

22. TRIPS Agreement Exceptions to the protection (Art. 24) Continued use of a GI (at least 10 years) prior to conclusion of the Uruguay Round (only for GIs for wines and spirits) GI conflicts with a pre-existing trademark right acquired in good faith GI = generic name for the products or for a grape variety

23. Doha Agenda • The multilateral register for wines and spirits EU’s proposal “joint proposal” Hong Kong, China-Compromise 2. Extending a higher level of protection beyond wines and spirits

24. (including EC) Agreement only 7Protocol only 24Agreement and Protocol 50 Madrid Agreement and Protocol 82 Contracting Parties

25. Collective mark Holder: association of producers Holder may use the mark Control by association Certification mark Holder: independent entity Holder cannot use the mark Control by independent entity How to protect GIs? Collective or certification marks Regulations of use

26. The Procedure Country of Origin International Bureau of WIPO Designated Contracting Parties

27. Madrid System

28. Working Group on the Development of the Lisbon System (Appellations of Origin) • Proposal to open up the Lisbon system to the accession of competent intergovernmental organizations (IGOs); • Proposal to introduce two separate definitions in the Lisbon Agreement: one for appellations of origin, and the other for geographical indications

29. Working Group on the Development of the Lisbon System (Appellations of Origin) FUTURE WORK • Definitions • Scope of protection • Prior users • Applications for trans-border AOs and GIs • Accession criteria for IGO’s • to prepare a study on the possibility of dispute settlement within the Lisbon system.